Thursday, September 21 2023   \  Published by Deep & Far Attorney.

TIPO Issues Draft Revision Notice Regarding Patent Examination Guidelines

TIPO Issues Draft Revision Notice Regarding Patent Examination Guidelines

The Taiwan Intellectual Property Office has made some amendments to certain sections of the Patent Examination Guidelines as part of an ongoing effort to reform examination practices and update other aspects of the judicial system. Some of the highlights are as follows:

1. Concerning divisional applications, whereas now only one divisional application is permitted, the new guidelines state that in the event of a parallel filing, the applicant will have the freedom to file more than one divisional application. However, when the parent or any divisional application proceeds to allowance, the applicant shall decide in the reply to TIPO which application sharing the same invention with the earlier granted utility model is the one to receive the patent right. Also, division from a domestic priority basis is now possible. An earlier application which has served as the basis of 2 domestic priority will be deemed withdrawn 15 months from its own filing date, and TIPO will consider it as dormant because the later-filed application has replaced it as a result of priority. However, the applicant is permitted to file for a new divisional application from the earlier-filed application to include matters that are not joined in the later-filed application. This is to give the applicant a greater latitude of procedural freedom.

2. For the issue of double jeopardy and invalidation issues, when an invalidity challenge against a multiple dependent claim where the present challenge only addresses a portion of the patent right comprised by said multiple dependent claim and some claims therefrom, if the present challenge ultimately fails, another new invalidity challenge against the unaddressed portion of the patent right can still be instituted without the risk of double jeopardy. 

Ready to Get Started?

Contact Sales